Federal Circuit: PTAB Claim Construction Arguments

The US Courtroom of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) obviousness determination after discovering that the patent proprietor failed to elucidate how its cited extrinsic proof supported its proposed declare development. Uniloc 2017 LLC v. Netflix, Inc., Case No. 21-2085 (Fed. Cir. Dec. 15, 2022) (Dyk, Taranto, Hughes, JJ.) (nonprecedential).

Uniloc owns a patent directed to a “extra environment friendly” technique for encoding movies by solely coding on the pixel stage when mandatory and, the place doable, reusing code for macroblocks within the background space. Netflix petitioned for inter partes evaluation of a number of claims in Uniloc’s patent. The Board finally discovered the claims unpatentable as apparent. Uniloc appealed.

Uniloc argued that the Board erred in its declare development of a limitation that required “dividing the stationary background area and the thing area from an inputted video in a macroblock-by-macroblock foundation by utilizing a distinction between the earlier body and the present body.” The dispute earlier than the Federal Circuit was whether or not the “macroblock-by-macroblock foundation” required that the act of dividing be achieved macroblock-by-macroblock, as urged by Uniloc, or whether or not the dividing resulted in separate macroblock-based areas, as urged by Netflix and located by the Board. The Courtroom concluded that Netflix and the Board have been appropriate.

The Federal Circuit first addressed the intrinsic file, discovering that it was ambiguous as to the that means of “macroblock-by-macroblock foundation.” Though the declare language supported both interpretation, Uniloc’s argument would require the Courtroom to learn language into the declare that was “merely not there.” The specification didn’t make clear the declare development situation both. Though Uniloc pointed to 1 instance the place the dividing step occurred one macroblock at a time, the Courtroom said that it didn’t restrict declare language to examples used within the specification. Lastly, the Courtroom defined that the parts of the specification describing the aim of the invention and avoiding issues within the prior artwork additionally didn’t make clear the that means of the macroblock-by-macroblock foundation. As a result of the aim was merely to make coding extra environment friendly and keep away from dividing on the pixel stage, both interpretation may apply.

Relatedly, the Federal Circuit rejected Netflix’s argument that Uniloc forfeited the arguments on attraction associated to the parts of the specification explaining the aim of the claimed invention and the way it purportedly solved issues within the prior artwork. The Courtroom defined that the forfeiture doctrine doesn’t “preclude a celebration from proffering extra or new supporting arguments, primarily based on proof file, for its declare development.” Right here, Uniloc “merely cited extra help within the specification to help the identical argument it had at all times made” associated to the macroblock-by-macroblock foundation.

The Federal Circuit subsequent addressed the extrinsic proof and agreed with the Board’s determination {that a} “macroblock-by-macroblock foundation” required dividing leads to separate macroblock-based areas. Uniloc’s solely extrinsic proof was a dictionary definition of “foundation,” and Uniloc supplied no extra professional proof to elucidate technological info or utilization within the area that may help its interpretation. In distinction, Netflix supplied professional testimony and two declarations explaining that an individual of atypical ability within the artwork wouldn’t interpret “macroblock-by-macroblock foundation” to require dividing one macroblock at a time. Just like the Board, the Courtroom discovered that Netflix’s professional’s opinions have been according to the intrinsic file and didn’t credit score extrinsic proof that “runs afoul of the declare language or the specification.”

Uniloc additionally argued that the Board erred in its development of the “chosen recognized coding approach” limitation. The Federal Circuit, nevertheless, affirmed the Board’s determination associated to that limitation. Though Uniloc argued that the phrase “chosen” required a development that included a separate step of choosing, the Courtroom defined that it was a “phrase that characterizes the claimed use of a recognized coding approach.” Within the Courtroom’s view, Uniloc “s[ought] to show the final presumption that totally different phrases have totally different meanings right into a vibrant line rule that saves the patent from unpatentability.” The Courtroom discovered that the coding approach choice was not required to be a part of the encoding technique, nor did Uniloc level to any help for choosing a selected coding approach or cite any prosecution historical past or extrinsic proof to help this studying of the declare.

Accordingly, the Federal Circuit affirmed the Board’s obviousness discovering.